PTAB

IPR2013-00377

New Bay Capital LLC v. VirnetX Inc

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1. Case Identification

2. Patent Overview

  • Title: Agile Network Protocol for Secure Communications Using Secure Domain Names
  • Brief Description: The ’504 patent discloses a system for improving upon prior art Domain Name Service (DNS) systems. The purported improvement involves configuring a domain name service system to include an "indication" that the system supports the establishment of a secure communication link between two computers over a network.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 5, 16, and 27 under 35 U.S.C. §102(b)

  • Prior Art Relied Upon: Kiuchi ("C-HTTP – The Development of a Secure, Closed HTTP-based Network on the Internet," a 1996 publication from the Symposium on Network and Distributed Systems Security).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kiuchi discloses every limitation of the challenged claims. Kiuchi describes a C-HTTP (Closed HTTP) system for establishing secure communications for a closed group of institutions (e.g., medical facilities) over the Internet. The core of the argument centered on the "indication" limitation of claim 1. Petitioner asserted that Kiuchi’s C-HTTP name server, when queried for a permitted host, returns not only the IP address but also the public key of the server-side proxy and "Nonce" values. The provision of this security-enabling data itself constitutes the claimed "indication" that the system supports establishing a secure link, as this data is necessary for the client-side proxy to initiate the secure connection.
    • Dependent Claims: Petitioner further argued Kiuchi anticipates the dependent claims. Kiuchi discloses domain names with top-level components (claim 2), the use of cryptographic techniques like digital signatures to authenticate queries (claim 5), a query originating from a "first location" (client-side proxy) to a "second location" (server-side proxy) (claim 16), and enabling the secure link "transparently" to the end-user, as Kiuchi states users "do not have to be conscious of using C-HTTP based communications" (claim 27).

Ground 2: Obviousness of Claim 21 under 35 U.S.C. §103

  • Prior Art Relied Upon: Kiuchi and Broadhurst (Patent 6,560,634).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 21 depends from claim 1 and further requires the domain name service system to comprise a "server" that includes a "domain name database" for storing the domain names and corresponding network addresses. Petitioner argued that Kiuchi discloses a "C-HTTP name server" that stores and retrieves this information. While Kiuchi does not explicitly use the term "database," Broadhurst explicitly teaches that a standard DNS system refers to a "distributed database" and that DNS servers contain a "domain name database" with records associating domain names with numerical IP addresses.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have found it obvious to implement the data storage function of Kiuchi's name server using a standard domain name database as taught by Broadhurst. This would have been a well-known, conventional, and predictable design choice for managing the required domain name and IP address records.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the teachings, as it would merely involve applying a standard data storage structure (Broadhurst's database) to implement a known function (Kiuchi's name resolution).

4. Key Claim Construction Positions

  • "configured...to comprise an indication that the domain name service system supports establishing a secure communication link": Petitioner argued this key phrase, which was added during prosecution without definition, should be given its broad, ordinary meaning of "something that serves as a sign or token signifying" support for a secure link.
  • Judicial Estoppel: A central argument was that the Patent Owner (VirnetX) should be judicially estopped from proposing a narrower construction than it had successfully advocated for in prior district court litigations against Microsoft and Apple. In those cases, VirnetX argued for, and the court adopted, broad constructions for key terms. For example, Petitioner noted that in the Apple litigation, VirnetX’s expert identified an "accept push message" containing address and certificate information as satisfying the "indication" limitation, demonstrating a broad interpretation that should apply in the IPR. Petitioner contended that these prior broad constructions, having been successfully asserted, should determine the claim scope for the IPR.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that this IPR petition should not be denied based on two pending inter partes reexaminations of the ’504 patent. It distinguished its petition as "highly streamlined," focusing on a small subset of claims and primarily a single prior art reference (Kiuchi). Petitioner contended that this approach, along with "new evidence and explanations," differed significantly from the broader, multi-reference challenges in the reexaminations. Furthermore, Petitioner asserted that the pending reexaminations were unlikely to conclude on the merits due to statutory estoppel provisions arising from final judgments in related district court cases.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 5, 16, 21, and 27 of the ’504 patent as unpatentable.